ITALY Law and Practice Contributed by: Daniela Ampollini, Luca Pellicciari, Elena Mannini and Andrea Beltrame, Trevisan & Cuonzo
can also be used to file parallel infringement pro - ceedings in foreign jurisdictions. The motion for a search may also include a request for the court to issue a seizure of infring - ing goods or a preliminary injunction. The pat - entee can make these requests contingent on the outcome of the search proceedings. If the search yields positive results, the case can then progress to an evaluation of validity and infringe - ment on an inter partes basis. In this scenario, the deadline to file main infringement proceed - ings begins from the date a final order is issued regarding these additional remedies. 1.9 Declaratory Relief Declaratory actions can be pursued both in the form of merits proceedings aimed at ascertain - ing non-infringement with a judgment suscep - tible to become res judicata, as well as in the form of urgent proceedings aimed at the grant of preliminary declaratory relief, ie, an order declar - ing on a preliminary and urgent basis that the allegedly infringing product or process does not infringe. In both cases, declaratory relief can be applied based on pure non-infringement argu - ments as well as on pure invalidity arguments (ie, the product or process at issue does not infringe in that the patent is invalid). The threshold to access declaratory relief in the form of main proceedings is low as it will gener - ally be sufficient for the alleged infringer to dem - onstrate that it holds and/or plans to develop an allegedly infringing product or process and to bring arguments supporting non-infringement and/or invalidity. The threshold to access declar - atory relief in the form of preliminary proceedings (de facto reverse PIs) is higher because the peti - tioner also needs to establish a risk of suffering irreparable harm in the absence of the requested declaratory relief. This threshold is typically met
by making the case that the allegedly infring - ing product is either being developed or inching closer and closer to launch and that the paten - tee has either implicitly or explicitly threatened infringement proceedings, including the filing of PI motion(s) from which the alleged infringer needs to be shielded. Arrow declarations (declarations aimed at obtain - ing an assessment that an allegedly infringing product or process would implement prior art and, therefore, cannot infringe upon anything) do not exist in Italy. Arrow declarations have been devised (in the UK) for those situations where the feared infringement was in respect of a pat - ent that was still at the application stage/await - ing formal grant, which made it impossible to file for declaratory relief as the latter would only become available upon patent grant. In Italy, declaratory preliminary relief can, however, be sought with respect to patent applications (just as much as PI relief can be obtained based on patent applications), which makes arrow decla - The doctrine of equivalence is available in Italy and the subject matter of a specific statutory provision, according to which “when determin - ing the scope of protection conferred by a patent [based on the patent claims interpreted in light of both description and drawings] due account must be taken of any element that is equivalent to the elements identified in the claims” (see Arti - cle 52(3bis) Italian IP Code). Italian case law has developed and applied sev - eral tests over the years. The test most widely used in the past relied on identifying the same “inventive idea” or same “core” of the patented invention in the accused product. Nowadays, rations moot in Italian jurisdictions. 1.10 Doctrine of Equivalents
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